BTL Indus. v. Versalini Beauty & Spa Salon

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BTL INDUSTRIES, INC., Plaintiff, v. VERSALINI BEUATY & SPA SALON, Defendant.

No. 23-cv-8617 (LJL)

United States District Court, S.D. New York

July 8, 2024

OPINION AND ORDER

LEWIS J. LIMAN, United States District Judge.

Plaintiff BTL Industries, Inc. (“Plaintiff”) brings this action against Defendant Versalini Beauty & Spa Salon (“Defendant”) alleging patent infringement trademark infringement, and unfair competition. Dkt. No. 1. Defendant has not appeared in or answered the action. Plaintiff obtained a Certificate of Default from the Clerk of Court, Dkt. No. 12, and now moves for default judgment pursuant to Federal Rule of Civil Procedure 55(b)(2) and a permanent injunction pursuant to Federal Rule of Civil Procedure 65, Dkt. No. 19. Plaintiff also moves to file portions of its supporting papers under seal. Dkt. No. 14.

For the following reasons, the motions are granted.

BACKGROUND

Plaintiff is a Delaware corporation with its principal place of business in Massachusetts. Dkt. No. 1 ¶ 1. Plaintiff manufactures and sells body-contouring devices it calls “EMSCULPT” machines, which are based on patented electromagnetic technology. Id. ¶¶ 16-17. These devices, cleared for use by the FDA, use “high-intensity, electromagnetic stimulation to tone and strengthen muscles in targeted areas” of their users' bodies. Id. ¶ 11. Plaintiff describes its devices as a “breakthrough development in the aesthetics industry” for its noninvasive techniques, as “EMSCULPT” users can now shape their bodies without having to exercise at all. Id. ¶ 15. Plaintiff licenses use of these machines to professionals in the aesthetics industry. Id. Beyond its patent rights, Plaintiff also possesses two registered trademarks for the name “EMSCULPT,” and it licenses use of those trademarks along with the machines' use. Id. ¶ 18.

Defendant Versalini is a business operating in New York that sells aesthetic and beauty treatments. Id. ¶ 2. Plaintiff, in its complaint, includes images from Defendant's website and social media accounts. Id. ¶ 23. On social media, Defendant shared a video depicting a device it labels “EMSCULPT”:

(Image Omitted)

Id.

On its website, Defendant advertises “EMSculpt treatment” that “uses high-intensity focused electromagnetic energy to stimulate muscle contraction in the targeted area. This energy triggers thousands of muscle contractions in just one session, which leads to muscle building and fat burning.” Id. During the treatments Defendant advertises, “patients lie down while paddles are placed on the targeted area. The paddles deliver high-intensity electromagnetic energy, which causes the muscles to contract.” Id. The complaint includes the following image of the advertisement:

How Does EMSculpt Work?

EMSculpt treatment uses high-intensity focused electromagnetic energy to stimulate muscle contractions in the targeted area. This energy triggers thousands of muscle contractions in just one session, which leads to muscle building and fat burning. During an EMSculpt treatment patients lie down while paddles are placed on the targeted area. The paddles deliver high-intensity electromagnetic energy, which causes the muscles to contract in a way that is not possible through voluntary contractions.

This sensation can feel like an intense workout, but most patients find the treatment to be tolerable.EMSculpt is ideal for individuals who are in relatively good shape but have stubborn pockets of fat or areas of muscle that are difficult to tone through exercise alone. It is not a weight loss treatment and is not recommended for those who are significantly overweight.

Results from EMSculpt can be seen within a few weeks of treatment, with full resultstypically appearing within two to four months. For best results, multiple treatments may be recommended.

How Many Treatments Will I Need?

The number of EMSculpt treatments you will need will depend on a few factors, including your body composition, your fitness goals, and the area you wish to treat. Generally, a series of four to six treatments, spaced two to three days apart, is recommended for optimal results. Your provider may suggest additional sessions based on your individual needs and goals.

Although some improvement can be noticeable after the initial session, optimal results will gradually appear within several weeks after the final treatment.

Patients should also continue a regular exercise routine and maintain a healthy diet to maximize the benefits of EMSculpt.

Id.

This process mirrors that protected by Plaintiff's patent, which protects “[a] method for toning muscles in a patient using time-varying magnetic fields, the method comprising: placing a first applicator comprising a magnetic field generating coil in contact with a patient's skin or clothing . . . and applying a magnetic fluence . . . to the body region, wherein the time-varying magnetic field . . . cause[s] muscle contraction[s] in the body region.” Id. ¶ 27. Given these parallels, Plaintiff claims that Defendant has committed and continues to commit patent infringement, trademark infringement, and unfair competition under both federal and New York state law. Id. ¶ 21. Specifically, Plaintiff alleges that “Defendant has since at least November 2, 2022, advertised a service using a device they call ‘EMSCULPT'” without Plaintiff's consent, thereby infringing on Plaintiff's patent and trademarks and engaging in unfair competition. Id. ¶ 22.

PROCEDURAL HISTORY

On November 2, 2022, Plaintiff's attorneys sent an initial notice letter via email to Defendant, informing Defendant of its infringing conduct. Id. Plaintiff's attorneys followed up again on August 28, 2023, after Defendant did not respond. Id. Defendant still has not responded.

Plaintiff filed this action on September 29, 2023, asserting claims for patent infringement, trademark infringement, and unfair competition. Id. ¶ 21. Plaintiff seeks (1) declaratory relief that Defendant infringed on Plaintiff's patent and trademarks and engaged in unfair competition; (2) a permanent injunction enjoining Defendant from infringing on Plaintiff's intellectual property rights; (3) actual or statutory damages pursuant to 35 U.S.C. § 284 and 15 U.S.C. § 1117; and (4) an award of Plaintiff's costs and expenses in this action. Id. at 15-18.

After Defendant failed to answer, appear, or otherwise respond to the complaint by the prescribed deadline, Plaintiff sought and obtained a Certificate of Default against Defendant from the Clerk of Court. Dkt. No. 12. On January 30, 2024, Plaintiff moved for default judgment against Defendant pursuant to Federal Rule of Civil Procedure 55. Dkt. No. 19. Plaintiff also moved to file portions of its default judgment motion papers under seal. Dkt. No. 14. Defendant has not responded to either motion.

LEGAL STANDARD

Federal Rule of Civil Procedure 55 sets forth a two-step procedure to be followed for the entry of judgment against a party who fails to defend: the entry of a default and the entry of a default judgment. See New York v. Green, 420 F.3d 99, 104 (2d Cir. 2005).

The first step, entry of a default, simply “formalizes a judicial recognition that a defendant has, through its failure to defend the action, admitted liability to the plaintiff.” City of N.Y. v. Mickalis Pawn Shop LLC, 645 F.3d 114, 128 (2d Cir. 2011); see Fed.R.Civ.P. 55(a). The second step, entry of a default judgment, “converts the defendant's admission of liability into a final judgment that terminates the litigation and awards the plaintiff any relief to which the court decides it is entitled,” to the extent permitted by the pleadings. Mickalis Pawn Shop, 645 F.3d at 128; see Fed.R.Civ.P. 55(b). Whether entry of default judgment at the second step is appropriate depends on whether the well-pleaded allegations against the defaulting party establish liability as a matter of law. See Mickalis Pawn Shop, 645 F.3d at 137.

While a defendant who defaults admits the well-pleaded factual allegations in a complaint, because the defaulting party does not admit conclusions of law, “a district court need not agree that the alleged facts constitute a valid cause of action.” Id. (citation omitted); see Spin Master Ltd. v. 158, 463 F.Supp.3d 348, 367 (S.D.N.Y. 2020) (“The essence of Fed.R.Civ.P. 55 is that a plaintiff can obtain from a default judgment relief equivalent to but not greater than it would obtain in a contested proceeding assuming it prevailed on all of its factual allegations.”). Therefore, this Court is “required to determine whether the [plaintiff's] allegations are sufficient to establish the [defendant's] liability as a matter of law.” Finkel v. Romanowicz, 577 F.3d 79, 85 (2d Cir. 2009). A party later challenging the entry of a default judgment must satisfy the “good cause shown” standard in Federal Rule of Civil Procedure 55(c), which “requires a court to weigh (1) the willfulness of default, (2) the existence of any meritorious defenses, and (3) prejudice to the non-defaulting party.” Guggenheim Cap., LLC. v. Birnbaum, 722 F.3d 444, 454-55 (2d Cir. 2013).

The legal sufficiency of a non-defaulting party's claims “is analyzed under the familiar plausibility standard enunciated in Bell Atlantic v. Twombly, 550 U.S 544, 570 (2007), and Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), aided by the additional step of drawing inferences in the movant's favor.” WowWee Grp., Ltd. v. Meirly, 2019 WL 1375470, at *5 (S.D.N.Y. Mar. 27, 2019). A default judgment entered on well-pleaded allegations does not reach the issue of damages, and Plaintiff “must therefore substantiate [her] claim for damages with evidence to prove the extent of those damages.” Hood v. Ascent Med. Corp., 2016 WL 1366920, at *15 (S.D.N.Y. Mar. 3, 2016), report and...